Supplemental examination

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Transcript Supplemental examination

Patent Law Update
Patent Attorney
El Paso, TX
[email protected]
 The following presentation is provided for informational
purposes only and should not be construed as legal
advice for your particular legal needs.
 Always consult an attorney for advice pertaining to your
specific business and intellectual property needs.
 All images and references to trademarked, copyrighted,
and/or patented material in this presentation is for
informational and educational purposes only.
Utility Patent - Protects concepts,
high level ideas, inventions.
Design Patent – Protects
ornamental design
Plant Patent
Search – USPTO databases
Provisional Patent Application – good
for ONE year
Non-Provisional Patent Application –
long examination process
USPTO Rejections-Prosecution
That’s all very interesting…
But how does IP
help my research?
Why should I invest in
protecting my IP?
 A marketing tool
 A source of revenue through licensing/acquisition
 A crucial component of franchising agreements
 Useful for obtaining banks or third party financing
 A valuable business asset
Be proactive: Invest in protecting your
bundle of business assets.
Be vigilant: Watch for potential
infringers – license, acquire
Be assertive: Protect your business
America Invents Act
 On September 16, 2011, President Obama signed into law the
“America Invents Act” which makes sweeping changes to the
US patent system.
America Invents Act
 Congress’s primary goals were to further enhance
opportunities for innovation and entrepreneurial investment,
to better harmonize U. S. patent laws with those of other
countries, and to streamline patent office procedures.
 Over the next 18 months, the US patent laws will change so
that by the spring of 2013, there will be new issues and new
proceedings for patent practitioners, inventors and
businesses to consider.
 Substantive patent law changes effective March 16, 2013
America Invents Act
 The most important of these new issues and procedures from
the America Invents Act are:
Moving to a “first-to-file” system:
 The United States has always had a “first-to-invent” system,
meaning that deciding whether an invention was new or not
obvious involved determining the state of the art at the time the
invention was conceived, not at the time the application was
 Most other patent systems around the world consider the state
of the art when the application was filed.
 An applicant will be entitled to a patent unless “the claimed
invention was patented, described in a printed publication, or in
public use, on sale, or otherwise available to the public before
the effective filing date of the claimed invention.”
“First-to-File” System
 One year grace period retained
 Even though system becomes first-to-file, still have one year
prior to public disclosure as a grace period for filing
 Publication prior to filing application:
 Need to file patent application within one year
 Could affect foreign patent rights
 An early public disclosure by the inventor can prevent a later
disclosure or application of another from barring the patentability
of the inventor’s subsequent application directed to the earlierdisclosed subject matter and filed within the grace period.
“First-to-File” System
 File Provisional Patent Application Prior to Any Public
 Protecting the Applicant's rights domestically and abroad
 Still allowing for later, fast publication to get the Applicant’s
art on record against its competitors.
America Invents Act
Assignee prosecution opportunities:
 Traditionally, a patent application is filed on behalf of an
inventor, and the resulting patent is issued in the inventor’s
name. Inventors can assign (e.g. sell or transfer) their patent
rights to a third party such as a business or another person, for
example the inventor’s employer.
 Traditionally these third parties (assignees) could move the
application through the Patent Office with certain authorizations
from the inventor. The new law still requires the original inventor
be identified.
 However, if the inventor is required to assign the invention to a
third party, the assignment can authorize the third party to take
control the application as it moves through the Patent Office.
 The resulting patent would issue in the third party’s name.
America Invents Act
Personal infringement defense based on prior use.
 The act provides a broader “prior use” defense, for use in
cases in which a business is using a process or machine as
part of a process, and has been doing so for more than one
year prior to the effective filing date of a patent that would
cover the process or machine.
 The defense is personal to the user, and can only be
transferred with the business to which the process or
machine relates.
 The defense addresses situations in which private first-users
have been accused of infringement of another’s later-filed
patent, where the non-public first use cannot be used to
invalidate the patent.
America Invents Act
Post-grant review of patents:
 Perhaps the most anticipated aspect of the new act creates
proceedings in the Patent Office to challenge issued patents.
 Two separate proceedings are created by the new law:
 The “inter partes” review permits allegations of invalidity over
prior art.
 The “post-grant” review permits allegations of invalidity on
any ground in the statute, and must be filed within nine
months of the patent’s issuance.
America Invents Act
Supplemental examination:
 The act provides a procedure for supplemental examination
of a patent by the owner.
 The supplemental examination is not a re-examination.
 However, if the Patent Office discovers a substantial new
question of patentability during a supplemental examination,
a re-examination will be ordered using the current reexamination procedure.
 A supplemental examination can be used to “cure” what
might be inequitable conduct in the original prosecution, if the
previously unconsidered or incorrect information was
considered or corrected in the supplemental examination.
America Invents Act
Micro Entity Filing fees:
 In addition to the existing large entity and small entity patent
fees, the act creates a “micro entity” fee structure, which will
most commonly be used by independent inventors.
 75% Discount on Large Entity Fees
 A “micro entity” is any small entity that has filed no more than
four applications, and has an income that is less than certain
specified limits.
 Micro entities are charged significantly lower fees that are
only 25% of the large entity fee (i.e. $250 for filing,
examination and search fees).
America Invents Act
Prioritized Examination
 Prioritized examination of a non-provisional application for an
original utility or plant patent can now be requested for
technologies important to American competitiveness
 However, this carries a fee of $4,800.
America Invents Act
Satellite Offices and Pro Bono
 Congress requires the USPTO to establish three satellite
offices within three years of the date of enactment (i.e., by
September 16, 2014). Increase outreach activities, enhance
employee retention, improve recruiting, decrease the
application backlog, and improve examination quality.
 Dallas, San Jose, Detroit
 The AIA directs the USPTO to work with intellectual property
law associations across the country in order to establish pro
bono programs for financially under-resourced inventors and
small businesses. A pilot program in Minnesota was
launched in June of 2010 to provide legal services to help
such individuals and businesses obtain solid patent
Thank you!